When and why to use Provisional, Utility or Design Patents
Unfortunately I’ve seen so many people lose tens of thousands of dollars on patents that didn’t earn a penny back. The only thing they earned was VERY expensive wallpaper!
Most inventors seek the assistance of a patent attorney as soon as they have an idea, without understanding the global process of inventing products that sell and what it will take to bring them to market! This tutorial is dedicated to helping would-be inventors to understand that choosing to file a patent is more than a legal decision, it is a business decision!
Provisional Applications –
1. United States patent law, a provisional application is a legal document filed in the United States Patent and Trademark Office (USPTO), that establishes an early filing date, but which does not mature into an issued patent unless the applicant files a regular non-provisional patent application within one year. There is no such thing as a “provisional patent”.
A provisional application includes a specification, i.e. a description, and drawing (s) of an invention (drawings are required where necessary for the understanding of the subject matter sought to be patented ), but does not require formal patent claims, inventors‘ oaths or declarations, or any information disclosure statement (IDS). Furthermore, because no examination of the patentability of the application in view of the prior art is performed, the USPTO fee for filing a provisional patent application is significantly lower (US$ 130 as of April 2013 ) than the fee required to file a standard non-provisional patent application. A provisional application can establish an early effective filing date in one or more continuing patent applications later claiming the priority date of an invention disclosed in earlier provisional applications by one or more of the same inventors.
The same term is used in past and current patent laws of other countries with different meanings.
Utility Patents –
The procedure for granting patents, requirements placed on the patentee, and the extent of the exclusive rights vary widely between countries according to national laws and international agreements. Typically, however, a patent application must include one or more claims that define the invention. These claims must meet relevant patentability requirements, such as novelty and non-obviousness. The exclusive right granted to a patentee in most countries is the right to prevent others from making, using, selling, or distributing the patented invention without permission.
Under the World Trade Organization ‘s (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights, patents should be available in WTO member states for any invention, in all fields of technology, and the term of protection available should be a minimum of twenty years. Nevertheless, there are variations on what is patentable subject matter from country to country.
Design Patents –
In the United States , a design patent is a patent granted on the ornamental design of a functional item. Design patents are a type of industrial design right. Ornamental designs of jewelry, furniture, beverage containers (see Fig. 1) and computer icons are examples of objects that are covered by design patents.
A similar concept, a registered design can be obtained in other countries. In Kenya, Japan, South Korea and Hungary, industrial designs are registered after performing an official novelty search. In the countries of the European Community, one needs to only pay an official fee and meet other formal requirements for registration (e.g. Community design at OHIM, Germany, France, Spain).
It is important to know what will be required by an prospective licensees you plan on soliciting. Keep that in mind as you read on!
Provisional Applications – these are good for 1 year by entitling you to place the phrase “patent pending” on your product. It establishes a date of invention which is important because it is a first to patent “win’s” game. It allows you the opportunity to show your invention to companies or begin selling it to determine if it is worth investing more time and money in it during that year. At any time during that period you may convert it to a non-provisional, also called Utility Patent.
Utility Patent – these are good for 20 years from when you file and are significantly more expensive then Provisional or Design applications. I prefer to use an attorney, but there are plenty of great software programs and even sites like www.LegalZoom.com to assist you at a discounted rate for service. Remember, it is a legal document. If you are not technically inclined, I would not recommend you try this yourself.
Design Patent – these are good for 17 years and can be an excellent way to protect your idea if it fits the criteria. I’ve heard many people tell me they are not comfortable with Design Patents because of the scope of protection, but I have known several millionaires who became successful using design patents.
A COUPLE REASONS FOR WHEN TO USE WHICH:
Provisional Applications –
1. When you only plan on being in the market a short time. For example, if the product is based on an event that will be gone in a year, etc.
2. When you need to buy some time to go out and show the product to prospective partners, customers, etc. The patent pending status is valuable and a potential deterrent for thieves.
Utility Patent –
1. When the company you intend to license to only considers items with issued patents. Remember, a Provisional never issues.
2. When you are sure you know what you want to patent based on all the work you have done to date and don’t want to spend the extra time/money on a Provisional first.
Design Patent –
1. When what it looks like is what people will buy it for a Design will do the job.
2. When you want to double insulate yourself you can add a Design patent to the Utility or Provisional application to potentially get even more coverage. This is also helpful if the Utility won’t issue!
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